Cotterweb Enterprises Inc. v.
Claim Number: FA0810001227142
Complainant is Cotterweb Enterprises Inc. (“Complainant”), represented by John
Pickerill, of Fredrikson & Byron P.A.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <iboxdollars.com>, registered with Compana, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Héctor A. Manoff as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 30, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 2, 2008.
On October 2, 2008, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <iboxdollars.com> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 10, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 30, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on October 30, 2008.
A timely Additional Submission was submitted by Complainant and determined to be complete on November 4, 2008.
On November 6, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Héctor A. Manoff as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant makes the following assertions:
1. Complainant has obtained a trademark registration for INBOXDOLLARS, and has also common law trademark rights due to its continued use since June 30, 2000.
2. Complainant argues that the fact that it has a trademark registration for INBOXDOLLARS mark with the United States Patent and Trademark Office (“USPTO”) is prima facie evidence of the validity and distinctiveness of the registered mark.
3. The disputed domain name is virtually identical and confusingly similar to the INBOXDOLLARS® trademark.
4. Complainant sent to Respondent a cease and desist letter on May 7, 2008, which was unanswered at the time this complaint was filed.
5. Respondent has no rights or legitimate interest in the domain name at issue.
6. Respondent has no relationship with Complainant.
7. Respondent has not used the domain name in good faith and in connection with a bona fide offering of goods or services.
8. Respondent has never been commonly known by the domain name iboxdollars.com or the mark IBOXDOLLARS and has never acquired any trademark rights in the name or related marks.
9. Respondent is not making legitimate noncommercial or fair use of the domain name, without intent for commercial gain.
10. Respondent registered and uses the domain name iboxdollars.com in bad faith. In this regard, Respondent practices typo squatting, which involves taking advantage of simple misspellings of a mark to divert Internet users searching for the trademark owner’s website to the squatter’s, which in turn usually redirects the Internet user to commercial websites of the trademark owner’s competitors, which feature competing services.
Respondent contends as follows:
1. The disputed domain is not confusingly similar or identical to any trademark in which Complainant has rights.
2. Complainant’s mark is formed by two generic terms, which failed to obtain the necessary secondary meaning and association in the minds of consumers to link those generic terms to its goods and services.
3. Due to the several marks that include the terms “inbox”, the Respondent contends that when a crowded field exists where many different sources use similar marks, the presumption is that consumers will more carefully consider distinctions between putative marks and will not be easily confused.
4. Respondent has rights and a legitimate interest in the disputed domain name.
5. Complainant has not demonstrated that the disputed domain name was registered and is being used in bad faith.
6. Respondent is the registrant of thousands of domain names. Registering such terms to which no other party can claim exclusive use is a legitimate business and done in good faith.
7. Respondent did not register the disputed domain name to sell to Complainant or any other party nor has there been any such allegation by Complainant.
C. Additional Submissions
In its Additional Submission, Complainant essentially restated the arguments initially made, cited additional precedents in its support and contested Respondent’s arguments.
Based upon the facts and arguments presented to it, the Panel finds that:
1. Respondent’s <iboxdollars.com> domain name is confusingly similar to Complainant’s INBOXDOLLARS trademark.
2. Respondent does not have any rights or legitimate interests in the <iboxdollars.com> domain name.
3. Respondent registered and used the <iboxdollars.com> domain name in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant registered its <inboxdollars.com> domain name on June 30, 2000, and has established rights pursuant to Policy ¶ 4(a)(i) in the INBOXDOLLARS trademark through registration of the mark with the USPTO (Reg. No. 3,382,014, filed September 13, 2006, issued February 12, 2008). See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”).
The <iboxdollars.com> domain name was registered on June 3, 2005, which is prior to the registration date of the Complainant’s trademark. However, as stated in Digital Vision, Ltd v. Advanced Chemill Systems, D2001-0827 (WIPO Sept. 23, 2001) and other cases, Paragraph 4(a)(i) of the Policy does not require that the trademark be registered prior to the domain name. The fact that the disputed domain name predates Complainant’s trademark registration may only be relevant to the assessment of bad faith pursuant to Paragraph 4(a)(iii), which is considered below.
The <iboxdollars.com> domain name would be identical to the INBOXDOLLARS mark but for the omission of the letter “n” in Complainant’s mark and the inclusion of the generic top level domain (“gTLD”) “.com.” In this regard, it has been established that the inclusion of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to the complainant’s registered G GRANAROLO mark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel has considered Respondent’s argument that contends that the <iboxdollars.com> domain name is comprised of common, descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark. However, it does not agree with Respondent, since such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
According to the evidence in the record, Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). The WHOIS information identifies Respondent with the contact information for the disputed domain name under the alias “Texas International Property Associates –NA NA.” Additionally, Respondent does not address this argument in its Response. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant states that the <iboxdollars.com> domain name is being used to maintain a website that displays links that redirect Internet users interested in Complainant’s services to sites offering similar services in competition with Complainant. Moreover, Complainant proved that some of the links on Respondent’s website are labeled with the words “INBOX DOLLAR,” generating even more confusion for Internet users.
On the other hand, Respondent contends that it contracts out to third-parties to provide it with links and advertisements and therefore does not have control over the use of its website. The Panel finds that this argument is misplaced as it determines that Respondent remains responsible for the content posted to its websites. See Netbooks, Inc. v. Lionheat Publ’g, FA 1069901 (Nat. Arb. Forum Oct. 18, 2007) (“The Panel also notes that Respondent is responsible for the content of any website using the domain name at issue, and cannot pass that responsibility off to its registrar or domain name service provider.”); see also StaffEx Corp. v. Pamecha, FA 1029545 (Nat. Arb. Forum Aug. 27, 2007) (“Respondent has alleged that the registrar, GoDaddy, has posted these [competing] links for the website associated with the Domain Name. However, the Panel finds this is no excuse and holds Respondent accountable for the content posted to the site that resolves from the Domain Name.”). See also Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum Jul. 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Paragraph 4(c)(i) or 4(c)(iii) of the Policy).
Additionally, Respondent acknowledged that it is financially benefiting from these links through some form of referral fees. Under these circumstances, the Panel finds that Respondent’s use of the <iboxdollars.com> domain name constitutes neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry).
Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name.
It has been proved that the <iboxdollars.com> domain name resolves to a website displaying a series of links that redirect Internet users to Complainant’s direct competitors. Many of the links offer services and products that compete with those offered under Complainant’s INBOXDOLLARS mark. As a result, the Panel finds that Respondent has registered and is using the disputed domain name for the purpose of disrupting Complainant’s business and accordingly in bad faith pursuant to Policy ¶ 4(b)(iii). See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Moreover, the fact that Respondent has been subject to numerous prior
UDRP proceedings in which the disputed domain name was transferred (See JELD-WEN, inc. v.
And finally, the Panel agrees with the Complainant’s argument that Respondent had actual knowledge of Complainant’s rights in the INBOXDOLLARS mark when it registered and as it has used the disputed domain name. Complainant points out, and it can be seen from the evidence in record, that the links on the website that resolves from the <iboxdollars.com> domain name contain the title “INBOX DOLLAR”. Moreover, Complainant highlights that its <inboxdollars.com> domain name was registered roughly four years before the disputed domain name and its recently issued federal trademark registration. Therefore, the Panel concludes that Respondent at least had constructive knowledge of Complainant’s trademark INBOXDOLLARS. Registration of a domain name that is confusingly similar to another’s mark, despite knowledge of the mark holder’s rights, is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <iboxdollars.com> domain name be TRANSFERRED from Respondent to Complainant.
Héctor A. Manoff, Panelist
Dated: November 20, 2008
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